Detailed Action
This is the first office action on the merits for US application number 18/182,757.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant’s election without traverse of Invention I, the method of claims 24-28, and species a), of Figs. 1-3, in the reply filed on September 19, 2025 is acknowledged, which indicated that claims 24-28 read on the elected species.
Accordingly, claims 1-4, 7, 9, 11-15, and 18-23 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim(s) 24-28 is/are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim(s) 24 recites/recite the limitation "the depth" in line 1. There is insufficient antecedent basis for this limitation in the claim. Examiner is interpreting this as referring to, and suggests amending as, “for measuring [[the]]a depth”.
Claim(s) 25-28 is/are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, for its/their dependence on one or more rejected base claims.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 24 and 26-28 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ellis (US 5,171,248).
As to claim 24, Ellis discloses a similar a method (Figs. 1-5) capable of measuring a depth of a hole in a bone (col. 3 lines 51-54), the method comprising: inserting a cannula (12) into the hole (col. 3 lines 51-54), the cannula being disposed around a probe (28, 34, 32, 60, 52) having a proximal end (42) and a distal end (30, 36, 34, 32) including one or more prongs (32, 34), each of the one or more prongs: being capable of moving between a retracted position (Fig. 1, where col. 3 lines 25-27 disclose that the tip 22 of sleeve 12 is not shown for clarity purposes, and col. 3 lines 18-20 disclose the prongs placed in cannula 12) and a deployed position (Figs. 2 and 3, where col. 3 lines 25-27 disclose that the tip 22 of cannula 12 is not shown for clarity purposes) in which the prong is farther from a longitudinal axis of the probe than when the prong is in the retracted position (Figs. 1-3); and being biased toward the deployed position (via spring 60, Figs. 1-4, col. 3 lines 1-2); moving the cannula proximally relative to the probe to move the one or more prongs from the retracted position to the deployed position (Figs. 1-3 show the relative movement of the cannula and the probe in operation as the cannula 12 moving upwards/proximal relative to the probe grip portion 42, Figs. 1-3); and engaging a portion of the bone defining the hole with the one or more prongs (col. 3 lines 13-15).
As to claim 26, Ellis discloses moving the cannula distally relative to the probe to move the one or more prongs from the deployed position to the retracted position (Fig. 3 to Fig. 1).
As to claim 27, Ellis discloses removing the probe from the hole (Fig. 1, where col. 3 lines 54-57 disclose measuring for selection of a prosthesis).
As to claim 28, Ellis discloses that the one or more prongs comprise two or more prongs (as defined, i.e. 32, 34, Figs. 1-5).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 24-28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cunningham (US 4,033,043) in view of Ellis (US 5,171,248).
As to claims 24 and 25, Cunningham discloses a method (Figs. 1-13) capable of measuring a depth of a hole in a bone (Figs. 2 and 3, col. 4 lines 16-20), the method comprising: inserting a cannula (36) into the hole (Figs. 2 and 3), the cannula being disposed around a probe (14, 42, 44, 52, Figs. 1-3 and 5-7) having a proximal end (right end of 42 as shown in Fig. 5, Fig. 5) and a distal end (14) including one or more prongs (14), each of the one or more prongs being capable of moving between a retracted position (Figs. 1, 5, and 6) and a deployed position (Figs. 2, 3, and 7) in which the prong is farther from a longitudinal axis of the probe than when the prong is in the retracted position (Figs. 1-3 and 5-7); and engaging a portion of the bone defining the hole with the one or more prongs (Figs. 2 and 3). As to claim 25, Cunningham discloses moving a sleeve (54) disposed around the probe into contact with the bone (Figs. 2 and 3, col. 6 lines 3-5). As to claim 27, Cunningham discloses removing the probe from the hole (Fig. 1, where col. 1 lines 50-57 disclose determining the proper length of screw to be utilized in an orthopaedic surgical operation involving internal fixation of a fracture).
Cunningham is silent to each of the one or more prongs being biased toward the deployed position and moving the cannula proximally relative to the probe to move the one or more prongs from the retracted position to the deployed position. As to claim 26, Cunningham is silent to moving the cannula distally relative to the probe to move the one or more prongs from the deployed position to the retracted position. As to claim 28, Cunningham is silent to the one or more prongs comprise two or more prongs.
Ellis teaches a similar a method (Figs. 1-5) capable of measuring a depth of a hole in a bone (col. 3 lines 51-54), the method comprising: inserting a cannula (12) into the hole (col. 3 lines 51-54), the cannula being disposed around a probe (28, 34, 32, 60, 52) having a proximal end (42) and a distal end (30, 36, 34, 32) including one or more prongs (32, 34), each of the one or more prongs: being capable of moving between a retracted position (Fig. 1, where col. 3 lines 25-27 disclose that the tip 22 of sleeve 12 is not shown for clarity purposes, and col. 3 lines 18-20 disclose the prongs placed in cannula 12) and a deployed position (Figs. 2 and 3, where col. 3 lines 25-27 disclose that the tip 22 of cannula 12 is not shown for clarity purposes) in which the prong is farther from a longitudinal axis of the probe than when the prong is in the retracted position (Figs. 1-3); and being biased toward the deployed position (via spring 60, Figs. 1-4, col. 3 lines 1-2); moving the cannula proximally relative to the probe to move the one or more prongs from the retracted position to the deployed position (Figs. 1-3 show the relative movement of the cannula and the probe in operation as the cannula 12 moving upwards/proximal relative to the probe grip portion 42, Figs. 1-3); and engaging a portion of the bone defining the hole with the one or more prongs (col. 3 lines 13-15). As to claim 26, Ellis teaches moving the cannula distally relative to the probe to move the one or more prongs from the deployed position to the retracted position (Fig. 3 to Fig. 1). As to claim 27, Ellis teaches removing the probe from the hole (Fig. 1, where col. 3 lines 54-57 disclose measuring for selection of a prosthesis). As to claim 28, Ellis teaches that the one or more prongs comprise two or more prongs (as defined, i.e. 32, 34, Figs. 1-5).
One of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to replace the probe and modify the cannula engagement with the probe as disclosed by Cunningham with the probe and the cannula engagement with the probe as taught by Ellis in order to provide a known alternate surgical depth probe to rapidly determine the hole depth for choosing a particular prosthesis (Ellis col. 3 lines 50-57), i.e. for use in determining the proper length of screw to be utilized in an orthopaedic surgical operation involving internal fixation of a fracture (Cunningham col. 1 lines 50-57).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMY R SIPP whose telephone number is (313)446-6553. The examiner can normally be reached on Mon - Thurs 6-4.
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/AMY R SIPP/Primary Examiner, Art Unit 3775